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Zak Muscovitch gets reverse domain name hijacking win

Complainant filed UDRP after failing to acquire domain name during rebrand.

Domain name and trademark attorney Zak Muscovitch has successfully defended the domain name UnMail.com in a UDRP, getting a finding of reverse domain name hijacking for his client.

Intellect Design Arena Limited, which recently renamed its Slack-like corporate social network product from Octopus to UnMail, filed the case against David Wieland of iEstates.com, LLC.

Crucially, the Complainant changed the name of its product and started using it in commerce after iEstates acquired the domain name in 2013. This made it impossible to show that the domain name was registered in bad faith.

The complainant apparently focused its argument on use in bad faith while ignoring the requirement of registration in bad faith.

World Intellectual Property Organization panelist Andrew D. S. Lothian determined that Intellect Design Arena Limited engaged in reverse domain name hijacking for multiple reasons. Lothian said this appears to be a case of “Plan B” RDNH, in which the Complainant tried to acquire the domain name and then filed the UDRP after it was unsuccessful.

The Panelist, Andrew D.S. Lothian, deserves much of the credit for this outcome. He put a lot of effort into the decision. He could have taken the easy route and just allowed the Complainant to withdraw its complaint, but he understood the important principles at stake, and came out with a very well written and compelling decision on the merits.

That’s well noted about Lothian’s work! It’s a diligent and thorough decision.

‘There’s absolutely nothing to take the place of a good man.’ –Steinbeck

Especially helpful to prospective parties is his reminder that ‘targeting’ is the core question: “There was in any event an absence of any possibility that the Complainant or its rights were being targeted by the Respondent’s registration of the disputed domain name and thus an absence of any possibility that the Respondent was engaging in cybersquatting within the ambit of the Policy.”
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The Policy and the ACPA came into being to address targeting registrations. This is incontrovertibly clear in the Congressional Record. If the complainant did not exist at the time of registration, then there can be no targeting.

The appellate courts have nailed down this question. Even where the domain was acquired by the present registrant on the open market AFTER the trademark use began, a predating registration by ANY party defeats the ACPA’s registration requirement. Common sense and fair play lead us to this same result: an unrelated, ancient registration is evidence that the domain name possesses de facto inherent value, which is unrelated to the instant complaining mark user. (Don’t cry for the hapless complainant. There are text strings with thousands of happily coexisting users in the USPTO. Words like ‘smart’ and ‘blue’ have tens of thousands of concurrent registrations.)

The definition of ‘registration date’ must be sharpened in the UDRP to respect and reflect the case law. The same, predictable result must be obtained in a UDRP dispute as in an ACPA action, or the UDRP would be operating directly counter to its mandate to unburden the courts. (And inviting the rampant opportunistic theft that the ACPA language forestalls. See also, Gleissner.)